Appeal 2007-1361
Application 09/681,573
PDF, and we agree with the Examiner that "PDF is the at least one
publication format" (Answer 17) required by the claim, we further agree
with him that PDFWriter (always) selects the PDF for dissemination. We
have another issue, however, to address regarding claim 1-4 and 7.
Regarding claim 25, selection by PDFWriter, however, is different
from selection by a user. The Examiner does not allege, let alone show, that
the addition of Bendik, Chen, or Ouchi cures the aforementioned deficiency
of ATS. Absent a teaching or suggestion that a user selects at least one
format for dissemination, we are unpersuaded of a prima facie case.
Therefore, we reverse the rejection of claim 25 and of claims 26-29, which
depend therefrom.
B. REASON TO COMBINE ATS AND BENDIK
The Examiner makes the following finding.
It would have been obvious to one of ordinary skill in the art at
the time of the applicant's invention to have combined ATS
publication with Bendik's DMS, since it would have allowed a
user to use the advantages of a DMS, namely, easily sharing
documents within a workgroup without requiring knowledge of
the DOS filename or the physical location of the document
(Bendik: paragraph 0003).
(Answer 16.) The Appellants "believe[ ] that the Examiner has not properly
shown how it would be obvious to one skilled in the art to combine art that
contains such opposite teachings." (Reply Br. 2.) Therefore, the issue is
whether the Examiner has identified a reason that would have prompted a
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